Domain Holder Beats Back UDRP On ManhattanCenter.com, Without An Attorney

A one member UDRP panel rejected the claim of Manhattan Center Studios, Inc. on the domain manhattancenter.com

The domain name is owned by James Lawson who won this UDRP without the representation of an attorney and almost got a finding of Reverse Domain Name Hijacking (RDNH), although we are not sure why the panel did not makes such a finding in this case

The domain holder acquired the domain name on a drop in 2004.

The panel denied the complaint that was brought on a common law trademark claim and a pending trademark application for “MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM”

Here are the relevant findings from the panel:

“In order to prevail Complainant must prove both that the domain name is being used in bad faith andthat it was registered in bad faith. ”

“Resolution of the question of bad faith registration of the domain name turns on a point which is undisputed by the parties, which is that Respondent acquired the domain name after seeing its appearance on a “drop list” of existing domain names which were then available for registration after having been registered earlier by someone else. ”

“The significance of this is not only that Respondent had not created or registered the domain name in the first instance, but that there was evidently nothing in the surrounding circumstances when Respondent obtained it that should have alerted Respondent to the possible illegitimacy of the domain name, such as a suggestion of a pending or threatened challenge to it.

“Moreover, when Respondent acquired the domain name off the published drop list in January of 2004, Complainant possessed only a pending application for registration of the service mark described as “MANHATTAN CENTER HAM-MERSTEIN BALLROOM THE GRAND BALLROOM & Design mark.”

“That mark, which was eventually granted registration in January of 2005, includes an elaborate design graphic and is qualified by both a partial language disclaimer and a statutory limitation.”

“In such circumstances, the pendency of the underlying application for that mark cannot, in fairness, be relied upon by Complainant as notice to Respondent of Complainant’s rights in the mark MANHATTAN CENTER, and, therefore, as evidence of bad faith on the part of Respondent in registering the domain name manhattancenter.com.

“We are aware that complainant also claims rights in the common law trademark MANHATTAN CENTER, which it says predate the registration of Respondent’s domain name. ”

“However, although Complainant reports that it supplied to the USPTO evidence supporting the creation of such rights in the process of ob-taining registration of its registered mark, discussed above, the record in this proceeding is devoid of any such evidence”

Similarly, the evidence before us does not show that Respondent has employed the contested domain name to market goods or services to the detriment of Complainant.”

“Nor has any evidence been presented to suggest that Respondent has attempted to sell the domain name. ”

“Also important here is that there is no evidence in the record demonstrating that Respondent took steps either to conceal its identity or to provide false contact details when it registered the domain name, either of which might lend credibility to a claim of bad faith registration. ”

“For all of these reasons, we find that Complainant has failed to prove bad faith in the registration of Respondent’s domain name”

The panel declined to issue a finding of Reverse Domain Name Hijacking (RDNH) but was far from clear why they didn’t

The panel basically found the complainant did not submit any proof and having a common law trademark and clearly discounted the application filed for the MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM which of course even if filed and in effect at the time of the domain registration should not give the TM holder rights to the much shorter and more generic term ManhattanCenter.com.

The panel then went on to find no bad faith by the domain holder, that the domain holder was not using the domain to the detriment of Complainant and that the domain holder didn’t try to sell the domain.

It seems the panel should have found RDNH by its own language but just seemed to run out of gas and quickly ended the decision by saying the complainant did file the UDRP in bad faith.

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which owns around 80K domain names and whose retail site is at MostWantedDomains.com. Michael is also a Director of RightoftheDot.com which is a consultant in the new gTLD space and a broker of super premium domains. Michael Is also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest at #Internetofficial